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DISCLAIMER: This blog provides updates and information about various AIA related issues. However, for complete information on the requirements for a particular type of AIA filing, please consult the relevant statute and rules for the respective AIA provision.

Tuesday Sep 30, 2014

MESSAGE FROM JANET GONGOLA, SENIOR ADVISOR: USPTO Timely Releases Two New AIA Reports on Virtual Marking and the Satellite Offices

The USPTO is pleased to announce the release of two reports mandated by Congress under the AIA. Both reports were due in September 2014, and the agency issued each on time.

Satellite Office Report

Today, on its due date of September 30, 2014, the USPTO submitted the Satellite Office Report to Congress. The agency explained the criteria used to select the location of its four satellite offices in Detroit, Denver, Dallas, and the Silicon Valley as well as the process and timing to build out those offices.

The Report also delved into the achievements of the satellite offices, including their impact on the patent application backlog and pendency, examiner recruitment and retention, and stakeholder outreach. The USPTO reported that examiners in the satellite offices are contributing to a reduction of the patent application backlog and pendency equal to the examiners in Alexandria. The Office likewise reported that examiner recruitment and retention in the satellite offices of Detroit and Denver (the locations where permanent offices currently exist) match that for examiners in Alexandria.

Finally, the agency detailed numerous and varied stakeholder outreach events in each geographic location ranging from Saturday Seminars to educate stakeholders about the patent system to meetings with industries to spur innovation and the U.S. economy.

Virtual Marking Report

Two weeks ago, on September 16, 2014, the agency submitted its Virtual Marking Report to Congress. Under the AIA, an article may be marked with the word "patent" or abbreviation "pat." followed by a website address where the article is associated with the relevant protective patents. The Office solicited public input through a Federal Register Notice in preparing this Report and received nine comments in response. The agency drew from these comments in preparing the Report.

The agency first addressed the effectiveness of virtual marking as an alternative to physically marking the article with the patent information, concluding that virtual marking is serving its congressionally-intended purpose of making it easier for manufacturers to mark small-sized articles and keep patent information current on articles without having to re-tool production equipment or create new molds.

The Report next addressed whether virtual marking has limited or improved the public's access to patent information along with possible legal issues that arise from virtual marking. Because there has not been any litigation involving the virtual marking statutory provision yet, the USPTO noted that follow-up may be needed here.

Lastly, the agency considered deficiencies in constructive notice arising from virtual marking as compared with physical marking, not identifying any significant ones, though pointing to aspects to watch going forward.

Since the preissuance submission provision of the AIA went into effect seventeen months ago, members of the public have been able to submit prior art into another’s pending patent application if certain minimal requirements are satisfied. The Office has received a total of 1,414 preissuance submissions (also referred as “third-party submissions”) as of January 17, 2014. The submissions have arrived in all technology centers with the largest number in TC1700, which includes areas related to mechanical engineering, and the fewest in TC 2400, which includes areas related to electrical engineering. Figure 1 below shows the distribution of submissions across technology centers.

Figure 1

Proper Preissuance Submissions

Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper. Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas. The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements. Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.

Figure 2

Figure 3

Distribution of Documents in Proper Preissuance Submissions

In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office. Figure 4 below shows the submitted documents categorized by type.

Figure 4

Third-Party Submission Usage by Examiners

When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course. For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications. Figure 5 below depicts all the applications where a rejection issued after a proper submission was received. Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation. Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute. Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.

Figure 5

Figure 6

Crowdsourcing

The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange. Indeed, members of the public have been posting requests for prior art in published applications on these sites. The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing. The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings.

On Wednesday, December 19, 2012, the agency published final rules in the Federal Register to implement the micro entity provision of the America Invents Act. The final rules set forth the procedures for an applicant to claim micro entity status and to pay reduced patents fees as a micro entity. The final rules also cover procedures for an applicant to notify the Office of the loss of micro entity status and to correct payments of patent fees erroneously paid in the micro entity amount. The final rules will be effective on March 19, 2013. Here is a link to the micro entity final rules in the Federal Register:

An applicant who qualifies as a micro entity under the procedures outlined in the final rules will be eligible to pay reduced patent fees once the Office completes its fee setting rulemaking. The fee setting rulemaking is currently ongoing and is projected to be complete in the Spring 2013.

The USPTO is hosting a public roundtable in connection with the Genetic Testing Study on Thursday, January 10, 2013, from 1:00 to 4:00 pm Eastern Daylight Time in the Madison Auditorium at its Alexandria campus. The public is invited to participate and share remarks. The roundtable will be webcast; details for web access are forthcoming.

Section 27 of the AIA requires the USPTO to study and make recommendations regarding effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. In completing this study, the agency reviewed the academic and scientific literature, held two public hearings, and received twenty-seven sets of written comments. The agency determined that further discussion and analysis was needed before the agency could submit a report to Congress after reviewing the collected information, given the complexity and diversity of opinions, comments, and suggestions provided by interested parties and the important policy considerations involved. Consequently, this roundtable is designed to enable the agency to obtain additional information and fulfill its report obligations to Congress.

Additional details about the genetic testing roundtable and requirements to share commentary are available here:

Under Section 27 of the America Invents Act, the USPTO is required to study effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. To complete this study, the agency held two hearings and received a number of written comments from the public. As of Friday, June 15, 2012, the USPTO is in the process of finalizing its Genetic Testing report through an intra-agency clearance process. Because of this, the agency has alerted Congress that it will not be able to deliver the report on June 16, 2012, the due date required by the AIA. The agency will deliver its report as soon as possible once this process is complete.

USPTO Issues Reports for the Prior User Rights Defense and the International Patent Protection for Small Business Studies

From: Director David Kappos

I am happy to share that the USPTO delivered to Congress reports for the Prior User Rights Defense Study and the International Patent Protection for Small Business Study on January 13, 2012. The agency prepared these reports in collaboration with the Department of State, Department of Justice, United States Trade Representative, and Small Business Administration, respectively. They were due to Congress per the terms of the America Invents Act on January 14th and 16th. Our reports are available through the links below:

The agency is in the process of preparing reports for Congress for the Prior User Rights and International Patent Protection Studies. Thank you all for participating in these studies by attending and/or giving testimony at our respective public hearings as well as by submitting written comments to the agency. Your input is invaluable to our ability to address the issues that Congress posed to us and prepare comprehensive reports.

For the Prior User Rights Study, we held our public hearing on October 25, 2011, at the USPTO, and six witnesses gave testimony. Additionally, we have received 33 written comments during our comment period, which closed on November 8, 2011. You can view a webcast of the hearing and read all of the written comments here on our micro-site on the Studies page.

American businesses are known around the world for ingenuity and innovation. Many of the technologies that define our modern world – the smart phones we use to communicate, the cardiac stents that prolong lives, and the genetic tests that uncover diseases – were developed by American companies. We invent new products, new industries, and new ways of doing business.

The recently-enacted Leahy Smith America Invents Act introduces a number of fundamental changes to US patent law. In addition to changing the US system from first-to-invent to first-inventor-to-file, the new law also expands the scope of the existing prior user rights regime set forth in 35 U.S.C. 273 to apply to all inventions, not merely those related to methods of doing business. While this approach to prior user rights is similar to that applied in many countries throughout the world, it represents a new concept in US law. In light of this change, Congress has mandated the USPTO to undertake a study and report on prior user rights by January 16, 2012. Congress has identified, in particular, the following issues for study: